The Classification of Patents

by United States. Patent Office

Inasmuch as every relatively complex thing is made up of relatively simple things, it is obvious that all disclosures can not be cross-referenced. Any attempt to calculate the number of cross-references to be supplied if all disclosures of the subjects of invention were to be cross-referenced would show the number to be incalculable. It is necessary, therefore, to leave to the judgment of the classifier the propriety of cross-referencing unclaimed disclosures.

Should a patent contain a number of claims defining a number of differently classifiable inventions, complete cross-referencing from[p. 22] the class in which the classification is made original into the other appropriate classes or subclasses should be effected, unless cross-search notes or arrangement of subclasses with appropriate titles may be substituted to advantage.

Cross-referencing or cross-search notes are made, as a rule, from combination class to element class, but never or very rarely from the element class to the combination class in which it may be used. Thus cross-referencing should normally be downward in a schedule of subclasses. Search notes indicate parallel or otherwise related classes and subclasses, and those classes and subclasses in which analogous structures having different purposes but adapted to answer broad claims may be found.

By arbitrary rules of arrangement such as have been referred to in the section dealing with division and arrangement, a search may ordinarily be definitely limited to a certain number of subclasses, even where cross-references are not made. In such arrangement any given patent, if it be directed to one invention, may be searched in the subclass within which the definition places it or subclasses indented under it, and in certain subclasses above, whose titles will indicate that the invention might be included as a part of the matter defined to belong therein, but it would never have to be searched in any subclass following and not indented thereunder.

DIAGNOSIS TO DETERMINE CLASSIFICATION.

Each patent and each application discloses one or more means of the useful arts (using the term "means" to cover both processes and instruments in the sense in which it is used by Prof. Robinson), almost always more than one, since most new means are combinations of mechanical elements or acts. In some patents and applications the disclosure is coextensive with that which is claimed; in others there is matter disclosed but not claimed. The unclaimed disclosure may be as valuable as the claimed disclosure for purposes of anticipation, and the classification must provide for both. If the claimed disclosure belongs in one class and the unclaimed in others, the classifier must choose between two or more classes that one in which the patent or application shall be classified and those into which it shall be cross-referenced.

Claimed or unclaimed disclosure.—The claims of a patent are the statutory indices of that which the applicant believes to be new, they define an invention that has been searched by the Patent Office and no anticipation discovered for it. Future action must be based on inductions from past experience; none knows what the future lines of search will be; the only guides for future searches are the searches of the past; the evidence of past searches is the claims[p. 23] of patents; they trace the course of invention. Furthermore, a presumption of novelty attaches to the claimed matter; no such presumption attaches to the unclaimed. The law requires every patent for improvement to show so much of the old as is necessary to explain the uses of the improvement. In practice much more than that is disclosed. Questions as to the proper placing of patents and cross-references would be diminished by the strict enforcement of Rule 36 of the Rules of Practice requiring that the description and the drawings, as well as the claims, be confined to the specific improvement and such parts as necessarily coöperate with it. In any event both the claimed disclosure and that which is unclaimed must be taken care of, one by cross-reference, and the disclosure selected for cross-reference is that to which no presumption of novelty attaches.

This practice of placing patents by the claimed disclosure is sometimes misunderstood. Its chief application is in determining classification in case of disclosures involving a plurality of main classes. Furthermore, the mere letter of the rule is not to be applied in preference to its spirit. Subcombinations claimed may be placed with the combinations, and in subordinate type subclasses patents must be placed sometimes by claimed and sometimes by not-claimed disclosures.

Diagnosis of pending applications.—What has been said relates to patents. The bearing of the practice of adopting the claimed disclosure as the basis of assignment of applications for examination has also to be considered.

Two pending applications claiming the same means very commonly differ in the kind and extent of disclosure. One application may disclose several inventions. Which of the several disclosures shall be selected as the mark by which to place the application? For instance, the typical wire-nail machine has a wire-feeding mechanism, a shearing mechanism, an upsetting (forging) mechanism, side-serrating mechanism, and pointing mechanism; it may also have a counting mechanism, a packaging mechanism, an electric motor on its frame for furnishing power; and, in addition, numerous power-transmitting and other machine parts, such as bearings, oil-cups, safety appliances, etc. The applicant may have made a complete new organization of nail-machine and may seek a patent for the total combination. He may have invented a new shearing mechanism and have chosen to show it thus elaborately in the place of use he had in mind, or he may have designed a new counter or a new oil-cup or a new power transmission, or even a new motor, and have given his invention this elaborate setting. The shears, the counter, the oil-cup, the power transmission, and the motor are separately classifiable in widely separated classes. How shall the application be diagnosed for determining its place in the office classification? When the[p. 24] specification and drawing disclose (as most of them do) several subjects matter of invention, though claiming only one, which of those several subjects matter shall control the classification?